CHRISTIAN LOUBOUTIN’S “RED SOLE MARK” SAVED TO REMAIN LOUBOUTIN’S FOOTMARK IN HIGH FASHION, FOR NOW . . . R EANNA L. K UITSE* INTRODUCTION “A trademark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.” Under the Lanham Act, a party can protect a trademark by registering1 it with the federal government. Section 1051 of the Lanham Act lays out the2 specific requirements that all trademarks must meet in order to be valid. 3 Continual interpretation of these requirements by the courts— in areas ranging from product design, to restaurant design, to high fashion— has led to additional and more specific requirem ents for a valid trademark. In general, a trademark4 must be sufficiently distinct to identify a product, must be distinguishable from trademarks of other products, and must not serve a functional purpose that would5 hinder competition by preventing other producers from using the same feature to create their goods or services. However, even if the mark serves a functional6 purpose, its owner can still succeed in an action to protect the mark if the owner can show that the mark has acquired “secondary meaning,” such that consumers associate the mark almost exclusively with the owner’s good or service. The7 United State Court of Appeals for the Second Circuit had the opportunity to consider these requirements in Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc. (Louboutin II).8 C hristian Louboutin emerged in the high fashion industry in 1992 and became well-known for the lacquered red sole with which he marked all of his high-heeled fashion shoes. In 2008, Louboutin was awarded a trademark that9 * J.D. Candidate, May 2013, Indiana University Robert H. McKinney School of Law; B.A., Westmont College, Philosophy, Pre- Law Focus, Minor in Business, Dec. 2009. 1. Frequently Asked Questions About Trademarks, U.S. PATENT & TRADEMARK OFF. (last modified Mar. 9, 2012, 11:02 AM), http://www.uspto.gov/faq/trademarks.jsp#_Toc275426672. 2. 15 U.S.C. §§ 1051-1141n (2006 & Supp. V 2011), amended by Trademark Technical & Conforming Amendment Act of 2010, Pub. L. No. 111-146, 124 Stat. 66 (codified as amended at 15 U.S.C. §§ 1057-58, 1065, 1071, 1141k (Supp. V 2011)). 3. Id. § 1051. 4. See, e.g., Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995); Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992); Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108 (2d Cir. 2006). 5. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210-11 (2000). 6. See Qualitex, 514 U.S. at 164-65. 7. Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619, 635-36 (6th Cir. 2002). 8. 696 F. 3d 206 (2d Cir. 2012). 9. Christian Louboutin S.A. v. Yves Saint Laurent Am. Inc. (Louboutin I), 778 F. Supp. 2d 242 INDIANA LAW REVIEW [Vol. 46:241 became known as the Christian Louboutin “Red Sole M ark.” In 2011,10 Louboutin brought an action against Yves Saint Laurent, Inc. (“YSL”), alleging that the company was violating Louboutin’s trademark registration by putting red soles on the shoes in its newest fashion line. Louboutin filed a motion for a11 preliminary injunction in the United State District Court for the Southern District of New York, but the injunction was denied by the District Court on August 10, 2011. However, Louboutin filed an appeal in the United States Court of12 A ppeals for the Second Circuit, and the court found that the district court’s reasoning for denying Louboutin’s preliminary injunction action was inconsistent with current case law.13 The approaches taken by both the district court and Second Circuit addressed the question of whether a trademark could be based solely on color in the fashion industry. In exam ining this issue and Louboutin’s Red Sole M ark, and in14 denying Louboutin’s motion for a preliminary injunction, the district court expressed its strong doubts that Louboutin’s Red Sole M ark could be warranted protection as a valid mark. Although the district court did not explicitly state15 that the Red Sole M ark was invalid, the denial of the injunction, along with the court’s reasoning, indicated that any further action to protect the Red Sole M ark would likely result in the denial of the validity of the Red Sole M ark. Also16 implicit in the district court’s reasoning was the idea that a designer could not use simply color as a sole feature of his or her product logo. However, the Second17 Circuit disagreed, holding: [T]he District Court’s holding that a single color can never serve as a trademark in the fashion industry is inconsistent with the Supreme Court’s decision in Qualitex Co. v. Jacobson Products Co.,. . . and that the District Court therefore erred by resting its denial of Louboutin’s preliminary injunction motion on that ground.18 Also, the Second Circuit found that Louboutin’s Red Sole M ark had achieved “limited secondary m eaning,” and only shoes that had a red sole with a 445, 447-48 (S.D.N.Y. 2011), aff’d in part, rev’d in part, Louboutin II, 696 F.3d 206. 10. RED SOLE MARK, Registration No. 3,361,597 [hereinafter Registration]; see also U.S. Trademark Application Serial No. 77,141,789 (filed Mar. 27, 2007) (Louboutin’s application for trademark registration includes more in-depth analysis of the “Red Sole Mark,” including an indication that the red lacquer is an additional step added to the design process that costs more money than the standard tan or black sole most commonly found on high fashion footwear). 11. Louboutin I, 778 F. Supp. 2d at 449. 12. Id. at 458. 13. Louboutin II, 696 F.3d at 212. 14. Id. at 211; Louboutin I, 778 F. Supp. 2d at 450-51. 15. Louboutin I, 778 F. Supp. 2d at 457. 16. See id. 17. See id. at 450-54. 18. Louboutin II, 696 F.3d at 212 (internal citation omitted). 2013] CHRISTIAN LOUBOUTIN’S “RED SOLE M ARK” 243 contrasting upper color could be protected from infringement. Accordingly, the19 monochromatic design created by YSL did not infringe on Louboutin’s trademark, and there was no basis for the court to consider the validity of Louboutin’s mark any further. The question that arises out of these two20 decisions is what kind of protection can Louboutin expect for the Red Sole M ark in any future infringement actions? Part I of this N ote examines some of the history behind trademark law in the high fashion industry and discusses trademark protection for color specifically. Part II examines the decision in Louboutin I and why the court chose to deny Louboutin’s motion for a preliminary injunction. Part III examines the decision by the circuit court in Louboutin II. Part IV examines the possible effects of the functionality doctrine on Louboutin’s Red Sole M ark. Finally, Part V examines what Louboutin could do to alter his trademark and afford his well-recognized mark greater protection in the fashion design industry given the limited ruling by the circuit court. I. TRADEM ARK D EVELOPM ENT The main source of law governing trademarks is the Lanham Act, which was originally enacted as the Trademark Act of 1946. The Lanham Act is comprised21 of four subchapters, which address various aspects of tradem ark law. 22 Subchapters I and II deal specifically with the basic aspects of a trademark and trademark registration, respectively. The Act defines a trademark as follows:23 The term “trademark” includes any word, name, symbol, or device, or any combination thereof— (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.24 If the applicant’s desired m ark meets the requirements under the Act, the applicant may choose to apply for registration of the mark with the U.S. Patent and Trademark Office. W hen applying for registration of a trademark, the25 19. Id. at 225. 20. Id. 21. 15 U.S.C. §§ 1051-1141n (2006 & Supp. V 2011), amended by Trademark Technical & Conforming Amendment Act of 2010, Pub. L. No. 111-146, 124 Stat. 66 (codified as amended at 15 U.S.C. §§ 1057-58, 1065, 1071, 1141k (Supp. V 2011)). 22. Id. 23. Id. §§ 1051-1096. 24. 15 U.S.C. § 1127 (2006). 25. See Trademarks Home, U.S. PATENT & TRADEMARK OFFICE (last modified Oct. 24, 244 INDIANA LAW REVIEW [Vol. 46:241 applicant must include specific information about the mark in the application. 26 One important piece of information the applicant must include is a drawing of the specific “symbol” the applicant would like to protect, along with a description of the goods or services that are to be protected. Once a tradem ark is registered,27 the “certificate of registration . . . is prima facie evidence of the validity of the registration . . . and of the registrant’s exclusive right to use the mark . . . subject to whatever conditions or limitations may be contained in the certificate.” 28 Although registration is a helpful tool for protecting a mark, the Lanham A ct’s protection against trademark infringement is not limited solely to registered marks. The Lanham Act also provides protection for “unregistered trade29 dress.”30 W hen a trademark applies to the overall image or design of goods and products rather than to a specific symbol or logo placed on the good or product, the trademark is commonly referred to as “trade dress.” Black’s Law Dictionary31 defines trade dress as “[t]he overall appearance and image in the marketplace of a product or a commercial enterprise.” Trade dress can be protected under the32 Lanham Act so long as it is distinctive and serves a “primarily nonfunctional” purpose. “A mark or dress can be inherently distinctive if its intrinsic nature33 serves to identify a particular source.” However, if a mark or dress is not34 inherently distinctive, the mark or dress can still be protected “through attachment of secondary meaning.” Secondary meaning “occurs when, ‘in the minds of the35 public, the primary significance of a [mark or dress] is to identify the source of the product rather than the product itself.’” 36 2012), http://www.uspto.gov/trademarks/index.jsp (providing trademark searches and online filing services). 26. U.S. PATENT & TRADEMARK OFFICE, PROTECTING YOUR TRADEMARK: ENHANCING YOUR RIGHTS THROUGH FEDERAL REGISTRATION 10-13 (2010), available at http://www.uspto.gov/ trademarks/basics/BasicFacts_with_correct_links.pdf [hereinafter PROTECTING YOUR TRADEMARK]. 27. Id. at 4-7. 28. 4A LOUIS ALTMAN & MALLA POLLACK, CALLMANN ON UNFAIR COMPETITION, TRADEMARKS & MONOPOLIES § 26:5 (4th ed. 2011) (footnotes omitted). 29. 87 C.J.S. Trademarks, Etc. § 169 (2012) [hereinafter Trademarks, Etc.]. 30. Id. 31. See id.; BLACK’S LAW DICTIONARY 1630 (9th ed. 2009). 32. BLACK’S LAW DICTIONARY, supra note 31, at 1630. 33. Trademarks, Etc., supra note 29, § 169; see BLACK’S LAW DICTIONARY, supra note 31, at 1630; Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1 (1992). 34. Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619, 635 (6th Cir. 2002) (internal quotation marks omitted) (quoting Two Pesos, 505 U.S. at 768). 35. Id. 36. Id. (alteration in original) (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.11 (1982)). http://www.uspto.gov/trademarks/index.jsp 2013] CHRISTIAN LOUBOUTIN’S “RED SOLE M ARK” 245 A. Trademarks in the Fashion Industry G iven the importance in the fashion industry of fostering creativity and allowing for the free flow of ideas by designers, courts have been reluctant to protect a designer’s trademark that serves a functional purpose or restricts another designer’s creativity in any way. As such, a number of issues arise when a37 fashion designer attempts to protect his or her mark by registering it under the Lanham Act. One case that addressed some of these issues is Louis Vuitton M alletier v. Dooney & Bourke, Inc. In Louis Vuitton, the court applied a two-factor test to38 determine whether Louis Vuitton M alletier’s design, which encompassed a symbol plus a color, was infringed upon by a competing design. The first prong39 of the test asks whether the plaintiff’s mark warrants protection, and the second prong asks whether the use of a similar mark by the defendant causes consumer confusion. In considering the first prong, the court looked at two elements: 40 whether the mark was distinctive, and whether it had acquired secondary meaning. Based on the m ark’s unique color combination and unique symbol,41 along with its fame and recognition in the marketplace, the court concluded that Louis Vuitton’s mark was inherently distinctive and had acquired secondary meaning.42 For the second prong, the Louis Vuitton court turned to the multi-factor test developed in Polaroid Corp. v. Polarad Electronics Corp. In considering the43 question of consumer confusion, the court acknowledged that “no single [Polaroid] factor is dispositive” but focused its analysis on the second44 factor— the similarity of the two m arks. “To apply this factor, courts must45 analyze the mark’s overall impression on a consumer, considering the context in which the marks are displayed and the totality of factors that could cause confusion among prospective purchasers.” Ultimately, the court did not make46 a decision concerning this prong of the test; instead, the court remanded the case to the district court for consideration of the P olaroid factors. However, the47 court’s analysis of Louis Vuitton’s mark is still helpful for assessing trademark infringement in the fashion industry. 37. See, e.g., Louboutin I, 778 F. Supp. 2d 445, 452-53 (S.D.N.Y. 2011), aff’d in part, rev’d in part, Louboutin II, 696 F.3d 206 (2d Cir. 2012). 38. 454 F.3d 108 (2d Cir. 2006). 39. Id. at 112, 115. 40. Id. at 115. 41. Id. at 116. 42. Id. 43. 287 F.2d 492 (2d Cir. 1961). 44. Louis Vuitton, 454 F.3d at 118. 45. Id. at 117. 46. Id. (quoting Louis Vuitton Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532,537 (2d Cir. 2005)) (internal quotation marks omitted). 47. Id. at 117-18. 246 INDIANA LAW REVIEW [Vol. 46:241 In Louis Vuitton, the court considered whether a symbol and color combination warranted protection by considering the distinctiveness of the mark, along with its secondary meaning and the possibility of consumer confusion between the mark and a similar, competing mark. Other courts have applied a48 functionality test to this analysis. In general, the rule regarding functionality49 and trademarks is that a feature “is essential to the use or purpose of the article or . . . affects the cost or quality of the article” is functional and cannot be protected under the Lanham Act.50 The United States D istrict Court for the Southern District of New York considered whether a product design was functional in M aharishi Hardy Blechman Ltd. v. Abercrombie & F itch, Co. M aharishi designed pants called51 “Snopants,” which had elaborate designs and often had unusual fasteners, giving them a unique look. Abercrombie later developed the “Shi Ding Roll Up Pant,”52 which had many features sim ilar to those used on Snopants. In response to53 Abercrombie’s design, M aharishi brought an action alleging trade dress infringem ent in the hopes of protecting its design; however, the court held the Snopants were “not entitled to trade dress protection . . . as a matter of law.” In54 reaching this decision, the court conducted the same two-prong analysis employed by the Louis Vuitton court, considering whether the mark claim ed by M aharishi was distinctive and served a non-functional purpose, and considering the likelihood that consumers would confuse M aharishi’s and Abercrombie’s products. 55 In its analysis, the court considered the “aesthetic functionality doctrine,” stating: “W here an ornamental feature is claimed as a trademark and trademark protection would significantly hinder competition by limiting the range of adequate alternative designs, the aesthetic functionality doctrine denies such protection.” Additionally, the court stated that where the features “extend[ ] to56 the ‘overall look’ of the . . . product,” distinctiveness and functionality must be considered “together, not in isolation.” 57 W hile acknowledging the Supreme Court’s holding that a feature that “is 48. Id. at 115. 49. See, e.g., Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619, 640-42 (6th Cir. 2002); Maharishi Hardy Blechman Ltd. v. Abercrombie & Fitch, Co., 292 F. Supp. 2d 535, 542-43 (S.D.N.Y. 2003). 50. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995) (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982)) (internal quotation marks omitted). 51. Maharishi, 292 F. Supp. 2d. at 538. 52. Id. at 538-39. 53. Id. at 539. 54. Id. at 550. 55. Id. at 541; see Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 115-16 (2d Cir. 2001). 56. Maharishi, 292 F. Supp. 2d at 543 (quoting Wallace Int’l Silversmiths, Inc. v. Godinger Silver Art Co., 916 F.2d 76, 81 (2d Cir. 1990)). 57. Id.; see LeSportsac, Inc. v. K Mart Corp., 754 F.2d 71, 76 (2d Cir. 1985) (stating that trade dress can be a “particular combination and arrangement of design elements”). 2013] CHRISTIAN LOUBOUTIN’S “RED SOLE M ARK” 247 essential to the use or purpose of the article or . . . affects the cost or quality of the article” is traditionally considered functional, the M aharishi court also58 considered the decision in Stormy Clime Ltd. v. ProGroup, Inc., which held that59 “distinctive and arbitrary arrangements of predominantly ornamental features that do not hinder potential competitors from entering the same market with differently dressed versions of the product are non-functional and hence eligible for trade dress protection.” Stormy Clime indicates that it is possible for60 tradem ark law to protect an ornamental design so long as other designs are able to use similar, yet differently arranged, ornamental designs to enter the same market. Based on this analysis, the court in M aharishi found that M aharishi had61 made a sufficient showing that the Snopants design was not merely functional; however, because the action was to protect more than twenty-eight different designs that were not all similar, the court declined to grant M aharishi’s trade dress infringement claim against Abercrombie. 62 Another case that considered functionality and trade dress infringement under the Lanham Act is Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters, Inc. In this case, A bercrombie alleged that American Eagle copied various63 Abercrombie clothing designs and an Abercrombie catalog design in violation of the trade dress protection embodied in the Lanham Act. The court affirmed the64 district court’s award of summary judgment for American Eagle, deciding that allowing Abercrombie to monopolize the clothing design for which it was claiming trademark protection would allow Abercrombie to control something that is functional, which is not generally allowed under the trade dress doctrine. 65 In reaching this conclusion, the court considered the “effective competition” test: The “effective competition” test asks . . . whether trade dress protection for a product’s feature would hinder the ability of another manufacturer to compete effectively in the market for the product. If such hindrance is probable, then the feature is functional and unsuitable for protection. If the feature is not a likely impediment to market competition, then the feature is nonfunctional and may receive trademark protection.66 The rationale for this test was explained by the Seventh Circuit in W .T. Rogers Co. v. Keene: “[I]t would . . . be unreasonable to let a manufacturer use67 58. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995) (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982)) (internal quotation marks omitted). 59. 809 F.2d 971 (2d Cir. 1987). 60. Id. at 977. 61. Maharishi, 292 F. Supp. 2d at 548 (citing Stormy Clime, 809 F.2d at 977). 62. Id. at 544, 550. 63. 280 F.3d 619 (6th Cir. 2002). 64. Id. at 625. 65. See id. at 640, 645. 66. Id. at 642 (alteration in original) (quoting Mitchell M. Wong, The Aesthetic Functionality Doctrine and the Law of Trade-Dress Protection, 83 CORNELL L. REV. 1116, 1149 (1998)). 67. 778 F.2d 334 (7th Cir. 1985). 248 INDIANA LAW REVIEW [Vol. 46:241 trademark law to prevent competitors from making pleasing substitutes for his own brand; yet that would be the effect of allowing him to appropriate the most pleasing way of configuring the product.” The court used this test to reason that68 allowing Abercrombie to protect the way it designed its clothing line would keep other designers from entering the same market and would inhibit competition.69 The court also drew a distinction between a product feature, such as the overall design of the clothing that Abercrombie was attempting to protect, and a merely incidental feature. In this respect, the court considered: 70 whether the feature . . . is something that other producers of the product in question would have to have as part of the product in order to be able to compete effectively in the market . . . or whether it is the kind of merely incidental feature which gives the brand some individual distinction but which producers of competing brands can readily do without.71 Applying this test, the court declined to grant Abercrombie’s request to stop American Eagle from continuing to design its clothes with features similar to those found on the designs of Abercrombie. 72 As evidenced by the decisions in M aharishi and Abercrombie, a mark’s functional purpose becomes a very important inquiry for any court looking into trademark or trade dress infringement. Both of these cases examined functionality in the context of a feature that pertained to the overall appearance of the product. However, neither of these cases considered color as the sole distinguishing feature. Therefore, it is necessary to look to cases outside of the fashion industry to better understand trademark protection of a single color. B. Color Trademarks In Qualitex C o. v. Jacobson Products Co., Qualitex brought an action73 against Jacobson alleging trademark infringement. Qualitex had been dying its74 dry cleaning pads a green-gold color since the 1950s, and in 1991, it registered a trademark to protect its green-gold mark. Two years prior to the registration75 of Qualitex’s mark, Jacobson had begun to market and sell dry cleaning pads with a similar green-gold color. A fter registering its trademark, Qualitex added a76 trademark infringement claim under the Lanham Act to a claim it already had 68. Id. at 340. 69. Abercrombie, 280 F.3d at 644. 70. Id. at 643-44. 71. Id. at 642 n.18 (first alteration in original) (quoting W.T. Rogers, 778 F.2d at 346). 72. Id. at 643-44. 73. 514 U.S. 159 (1995). 74. Id. at 161. 75. Id. 76. Id. 2013] CHRISTIAN LOUBOUTIN’S “RED SOLE M ARK” 249 against Jacobson for unfair competition. 77 In considering Qualitex’s trademark infringement claim, the Supreme Court looked at the history and language of the Lanham Act to conclude that color alone may be protected as a trademark. The Court also looked at the rationale behind78 allowing a trademark for a color alone and considered the value of a trademark for a consumer. Trademarks make it possible for consumers to identify a good79 by a particular feature and, based on that identification, easily ensure that they are purchasing a high-quality product. Additionally, once a consumer associates a80 specific mark with a specific product, the mark acquires secondary meaning and can be considered inherently distinctive. 81 The Court looked at the U.S. Department of Commerce Patent and Trademark Office’s Trademark M anual of Examining Procedure, which “approv[es] trademark registration of color alone where it has become distinctive of the applicant’s goods in commerce, provided that there is [no] competitive need for colors to remain available in the industry and the color is not functional.” W ith these considerations in mind, the Court found there was no82 reason that color should not be allowed as a source identifier and therefore allowed it as a valid trademark. 83 The Supreme Court then considered the functionality doctrine, choosing to follow the general rule laid out in Inwood Laboratories., Inc. v. Ives Laboratories, Inc.:84 [I]n general terms, a product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article, that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage.”85 The Court also considered the aesthetic value of a good as it applies to functionality. In doing so, the Court cited the Restatement (Third) of Unfair Competition, which states that “[a] design is functional because of its aesthetic value only if it confers a significant benefit that cannot practically be duplicated by use of alternative designs.” 86 77. Id. 78. Id. at 162-63. 79. Id. at 163-64. 80. Id. 81. Id. at 163. 82. Id. at 166 (alterations in original) (quoting U.S. DEP’T OF COMMERCE, PATENT & TRADEMARK OFFICE, TRADEMARK MANUAL OF EXAMINING PROCEDURE §§ 1202.04(e), 1202-13 (2d ed. 1993)) (internal quotation marks omitted). 83. Id. at 164. 84. 456 U.S. 844 (1982). 85. Qualitex, 514 U.S. at 165 (alteration in original) (quoting Inwood, 456 U.S. at 850 n.10) (internal quotation marks omitted). 86. RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 17 cmt. c (1993) (cited in Qualitex, 250 INDIANA LAW REVIEW [Vol. 46:241 In applying these two rules to color as a property, the Court found that it is possible for a color to serve a non-functional purpose so long as it “is not essential to a product’s use or purpose[,] . . . does not affect cost or quality[,]”87 and does not inhibit the possibility for alternative designs. Therefore, the Court88 held that the color of the dry cleaning pads at issue was protectable because the color acted as a symbol, had developed secondary meaning, and served no other functional purpose. In assessing the color as nonfunctional, the Court noted that89 although the pads required some color to hide dirt and stains, there were other colors that could be used by competitors for that purpose. 90 Other courts have afforded trademark protection for a color based on secondary meaning and non-functionality in the context of a particular product. In In re Owens-Corning Fiberglas Corp., Owens-Corning challenged the91 decision of the United States Patent and Trademark Office’s Trademark Trial and A ppeal Board, which had affirmed the denial of Owens-Corning’s application for a trademark to protect its use of the color pink for its fibrous glass residential insulation. The court focused on functionality and secondary meaning to92 reverse the Board’s decision, finding Owens-Corning was entitled to register the pink color of its insulation as a mark under the Lanham Act. In determining that93 Owens-Corning’s use of the color had acquired secondary meaning, the court considered “evidence of the trademark owner’s method of using the mark, supplemented by evidence of the effectiveness of such use to cause the purchasing public to identify the mark with the source of the product.” 94 Specifically, the court focused on the extensive amount of advertising employed by the company to encourage consumers to associate the color pink almost exclusively with its brand of insulation. Additionally, the court determined that95 the application of the color pink to insulation served “no utilitarian purpose,” and it did “not deprive competitors of any reasonable right or competitive need.”96 Conversely, in Brunswick Corp. v. British Seagull Ltd., the Federal Circuit97 C ourt of Appeals contemplated whether Brunswick was entitled to register a trademark protecting the color black on outboard engines for motorboats. The98 Patent and Trademark Office’s Trademark Trial and Appeal Board had rejected Brunswick’s application to register the black color of its outboard engines; the 514 U.S. at 170). 87. Qualitex, 514 U.S. at 165. 88. Id. at 169. 89. Id. at 166. 90. Id. 91. 774 F.2d 1116 (Fed. Cir. 1985). 92. Id. at 1118. 93. Id. at 1128. 94. Id. at 1125. 95. Id. at 1124-28. 96. Id. at 1122. 97. 35 F.3d 1527 (Fed. Cir. 1994). 98. Id. at 1529. 2013] CHRISTIAN LOUBOUTIN’S “RED SOLE M ARK” 251 Board noted that although the color did not make the engine function better, nor affect the cost or quality of the engine, it did arguably make the engine appear99 smaller and blend in better with a wider variety of boat colors. The Brunswick100 court applied an interesting analysis acknowledging two different types of functionality: de facto and de jure. The court explained the difference: “[D]e101 facto functional means that the design of a product has a function, i.e., a bottle of any design holds fluid. De jure functionality, on the other hand, m eans that the product is in its particular shape because it works better in this shape.” Under102 this rule, de facto functional features may sometimes be protected; however, de jure functional features, which pertain to utility, may not be protected. The103 rationale behind this distinction is that protection of de jure functional features poses a greater obstacle to competition in the marketplace by hindering the creation of new versions of existing goods in a superior functional form. In the104 case of the color black used on a boat engine, the court found that it was possible to find that the color served a de jure functional purpose because of “competitive need.” 105 In addressing competitive need regarding color and functionality, the court quoted approvingly from the Trademark T rial and Appeal Board: “[W ]hen we consider whether a color is functional we must consider whether alternative colors are available in order to avoid the fettering of competition. If competition will be hindered, the color in question is de jure functional.” The court upheld106 the Trademark Trial and Appeal Board’s holding that the color black, applied to an outboard engine, made the engine appear smaller and made it blend in with a wide variety of other boat designs and colors, and that therefore, allowing Brunswick the sole use of the color black in the outboard motor m arket would hinder competition. 107 The court drew a distinction between Brunswick’s use of the color black in this case and Owens-Corning’s use of the color pink in Owens-Corning. The court noted that the color pink in Owens-Corning served solely as a source identifier for Owens-Corning. There was no competitive need for an insulation108 manufacturer to use pink rather than the normal yellow color that resulted from the manufacturing process of insulation; thus, allowing Owens-Corning a trademark for its use of the color pink would not hinder competition in the 99. Id. 100. Id. 101. Id. at 1531. 102. Id. (quoting In re R.M. Smith, Inc., 734 F.2d 1482, 1484 (Fed. Cir. 1984)). 103. Id. 104. Id. 105. Id. 106. Id. at 1532 (alteration in original) (quoting British Seagull Ltd. v. Brunswick Corp., 28 U.S.P.Q.2d (BNA) 1197, 1199 (T.T.A.B. 1993)). 107. Id. at 1531-32. 108. Id. 252 INDIANA LAW REVIEW [Vol. 46:241 insulation market. 109 Qualitex, Owens-Corning, and Brunswick are all examples of how courts have addressed the issue of a trademark in a single color in relation to products outside of the fashion design industry. However, they do not address all aspects of trademark law that courts consider when deciding whether to extend protection against a competing mark. C. Other Trademark Considerations 1. Functionality.— In Wallace International Silversmiths, Inc. v. Godinger Silver Art Co., the court denied W allace’s request for a preliminary injunction110 to stop Godinger from marketing silverware with a design similar to W allace’s Grande Baroque line under the trade dress doctrine of the Lanham Act. In111 denying the injunction, the court held that the Baroque style of W allace’s silverware was “aesthetically” functional and could not be protected. The court112 framed the concept of “aesthetic functionality” as the question of “whether the doctrine of functionality applies to features of a product that are purely ornamental but that are essential to effective competition.” In deciding whether113 the design that W allace was asking the court to protect was “necessary to the use or efficient production of the product,” the court considered the functionality114 test enunciated by the court in Stormy Clime Ltd. v. ProGroup, Inc.: [A court] should assess the degree of functionality of the similar features, the degree of similarity between the non-functional (ornamental) features of the competing products, and the feasibility of alternative arrangements of functional features that would not impair the utility of the product. These factors should be considered along a continuum. On one end, unique arrangements of purely functional features constitute a functional design. On the other end, distinctive and arbitrary arrangements of predominantly ornamental features that do not hinder potential competitors from entering the same market with differently dressed versions of the product are non-functional and hence eligible for trade dress protection. In between, the case for protection weakens the more clearly the arrangement of allegedly distinctive features serves the purpose of the product . . .115 In examining these factors, the court acknowledged that although the Baroque 109. Id. 110. 916 F.2d 76 (2d Cir. 1990), abrogated by Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996 (2d Cir. 1995). 111. Id. at 77-78. 112. Id. at 80-82. 113. Id. at 80. 114. Id. 115. 809 F.2d 971, 977 (2d Cir 1987) (internal citations omitted) (cited by Wallace, 916 F.2d at 79-80). 2013] CHRISTIAN LOUBOUTIN’S “RED SOLE M ARK” 253 design did not serve a utilitarian function regarding the silverware, allowing W allace to monopolize aesthetic features specific to the Baroque style would unduly hinder potential competition by limiting Godinger’s ability to design Baroque style silverware. Additionally, although the court acknowledged that116 W allace’s Baroque design may have acquired secondary meaning, the court held that this secondary meaning did not justify W allace shutting out any competition in the market for baroque style silverware. 117 Wallace is an important case for consideration of Louboutin’s Red Sole M ark because it addresses the importance of examining the effect on competition of a trademark that serves solely an aesthetic function and has no utilitarian function. This concept is important for the fashion design industry because most trademarks that arise in the fashion design industry will arguably serve a primarily aesthetic function rather than a utilitarian function. 2. Aesthetic Functionality.— In Eco M anufacturing LLC v. Honeywell International Inc., the court stated, “Aesthetic appeal can be functional; often118 we value products for their looks.” However, the court added that recognition119 of purely aesthetic functionality should be limited because “it would always be possible to show that some consumers like the item’s appearance.” Therefore,120 in evaluating whether the round shape of a thermostat dial could be protected as a mark, the court considered possible functional purposes for using a round dial as opposed to a differently shaped dial, such as safety and ease of use, along with the more pleasing appearance of a round dial. Although the court declined to121 affirmatively state whether the round dial was functional, and therefore not entitled to trademark protection, the court’s acknowledgement of aesthetic122 functionality is helpful in effecting a broader understanding of functionality that encompasses the aesthetic advantages of a given design. 3. No Secondary M eaning.— In Two Pesos, Inc. v. Taco Cabana, Inc., the123 Supreme Court considered the extent to which a showing of secondary meaning is required to protect trade dress under the Lanham Act. Taco Cabana operated124 a chain of M exican restaurants whose buildings featured a very specific design. 125 Two Pesos was a competing M exican food chain that adopted a façade for its buildings that was very similar to the one used by Taco Cabana. In response,126 Taco Cabana brought an action against Two Pesos alleging trade dress 116. Wallace, 916 F.2d at 81. 117. Id. 118. 357 F.3d 649 (7th Cir. 2003). 119. Id. at 654 (citing Qualitex v. Jacobson Prods. Co., 514 U.S. 159, 169-70 (1995)). 120. Id. 121. Id. at 654-55. 122. Id. 123. 505 U.S. 763, 764-65 (1992). 124. Id. 125. Id. at 765. 126. Id. 254 INDIANA LAW REVIEW [Vol. 46:241 infringement under the Lanham Act. At trial in the United States District Court127 for the Southern District of Texas, a jury found that Taco Cabana’s trade dress was nonfunctional and inherently distinctive but had not acquired secondary meaning. Out of this decision “arose the question whether trade dress that is128 inherently distinctive is protectible under § 43(a) [of the Lanham Act] without a showing that it has acquired secondary meaning.” 129 The Supreme Court responded that when a trade dress or trademark is inherently distinctive, a showing of “secondary meaning is not required” to warrant protection for the trade dress or trademark. The Court’s rationale was130 that an inherently distinctive trade dress is, by its nature, one that identifies a specific product or service and is recognized in the market as a distinguishing feature of that product or service. If, however, a mark is merely descriptive of131 a product, the Court stated that a court must ask whether the trademark is uniquely associated with the brand and “has acquired distinctiveness through secondary meaning.” 132 4. Consumer Confusion.— W hen considering whether a trademark has acquired secondary meaning, the likelihood of consumer confusion is also an im portant consideration. In evaluating whether the name “Polarad” was too similar to the “Polaroid” tradem arked name, the court in Polaroid Corp. v. Polarad Electronics Corp identified eight factors for evaluating the likelihood133 of consumer confusion that have come to be known as the Polaroid factors: (1) the strength of the plaintiff’s mark; (2) “the degree of similarity between the” plaintiff’s mark and the defendant’s mark; (3) the proximity, or similarity, of the plaintiff’s products or services and the defendant’s products or services; (4) “the likelihood that the [defendant] will bridge the gap” and enter the defendant’s market; (5) evidence of actual consumer confusion; (6) whether the defendant’s mark was adopted in good faith or bad faith; (7) “the quality of the defendant’s product[s]” or service; and (8) “the sophistication of the buyers” in the relevant market. In considering these factors, the court focused on whether the134 companies produced goods of a similar nature and ultimately held that, although the names were confusingly similar, there was no infringement because the companies were producing for different markets. 135 In cases such as Qualitex and Owens-Corning, the courts chose to afford a single color trademark protection based primarily on the mark’s secondary 127. Id. at 765-66. 128. Id. 129. Id. at 767. 130. Id. at 767, 773. 131. Id. at 774. 132. Id. at 769 (citing RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 13 cmt. A (Tent. Draft No. 2, Mar. 23, 1990)). 133. 287 F.2d 492 (2d Cir. 1961). 134. Id. at 495; see, e.g., Malletier v. Dooney & Bourke, Inc., 561 F. Supp. 2d 368, 378 (S.D.N.Y. 2008). 135. Polaroid Corp., 287 F.2d at 498. 2013] CHRISTIAN LOUBOUTIN’S “RED SOLE M ARK” 255 meaning and recognition of the mark in the market. However, in B runsw ick,136 the court declined the opportunity to extend trademark protection to a color that served a competitive need in the industry. In Wallace and Honeywell, the137 courts acknowledged that aesthetic appeal may serve a functional purpose, though m ore is generally required than mere aesthetic functionality to establish that the trademark serves a functional purpose. However, in other cases, such as138 Abercrombie and M aharishi, the courts denied trademark protection for a mark because they determined that allowing trademark protection for the mark would hinder competition. The balance between functionality and secondary meaning139 is the exact balance that the court in Louboutin was asked to strike. II. LOUBOUTIN I D ECISION On January 1, 2008, Christian Louboutin was awarded a trademark by the U.S. Patent and Trademark Office to protect the Red Sole M ark he used on all of his high fashion shoes. The description provided on the certificate of140 registration indicates that the trademark is for the category of “women’s high fashion designer footwear.” The description also indicates that “[t]he color(s)141 red is/are claimed as a feature of the mark. The mark consists of a lacquered red sole on footwear.” The registration also includes a picture depicting a high heel142 shoe with a red sole. During litigation, Louboutin attempted to argue that the143 color of red depicted in the color drawing was the red he intended to protect rather than simply the color red as indicated on his registration certificate. 144 Also, in Louboutin’s reply brief at trial, Louboutin designated that the color was Chinese Red of the Pantone color group. Furthermore, he indicated that the145 type of high fashion footwear was more specifically “high-heeled [high-fashion] footwear.” These details, however, were not included on the final registration146 certificate.147 136. See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 166 (1995); In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1127-28 (Fed. Cir. 1985). 137. Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1531-32 (Fed. Cir. 1994). 138. See Wallace Int’l Silversmiths, Inc. v. Godinger Silver Art Co., 916 F.2d 76, 81 (2d Cir. 1990); Eco Mfg. LLC v. Honeywell Int’l Inc., 357 F.3d 649, 654 (7th Cir. 2003). 139. Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619, 645 (6th Cir. 2002); Maharishi Hardy Blechman Ltd. v. Abercrombie & Fitch Co., 292 F. Supp. 2d 535, 544, 550 (S.D.N.Y. 2003). 140. Louboutin I, 778 F. Supp. 2d 445, 448 (S.D.N.Y. 2011), aff’d in part, rev’d in part, Louboutin II, 696 F.3d 206 (2d Cir. 2012). 141. Registration, supra note 10. 142. Id. 143. Id. 144. Louboutin I, 778 F. Supp. 2d at 455. 145. Id. 146. Id. 147. Id. 256 INDIANA LAW REVIEW [Vol. 46:241 In 2011, YSL introduced its 2011 Cruise fashion line, which included four shoes that Louboutin believed infringed upon his mark. All four of these shoes148 had a bright red sole to go along with the rest of the shoe, which was also entirely red. The line incorporated the monochromatic design on all of its shoes (i.e., its yellow shoes had a yellow sole along with the rest of the shoe being all yellow). 149 In response, Louboutin brought an action to obtain an injunction to stop YSL from marketing the allegedly infringing shoes.150 In determining whether it would be appropriate to grant Louboutin an injunction, the court looked to the Louis Vuitton two-prong test and required Louboutin to show the following: “(1) its Red Sole M ark merits protection and (2) YSL’s use of the same or a sufficiently similar mark is likely to cause consumer confusion as to the origin or sponsorship of YSL’s shoes.” The court151 acknowledged that the certificate of registration provided the court with a presumption that the trademark was valid. The court also acknowledged that152 courts, including the Supreme Court in Qualitex, have allowed trademark protection for a single color where the color had acquired secondary meaning, so long as the color was not a functional feature of the good and did not affect the cost or quality of the good. 153 In the case of the Red Sole M ark, the court considered “the narrow question” of “whether the Lanham Act extends protection to a tradem ark composed of a single color used as an expressive and defining quality of an article of wear produced in the fashion industry.” The court decided that it did not. The154 155 court noted that in the fashion industry, color “plays a unique role,” and held156 that, given the nature of the fashion industry as a form of art and expression, allowing a designer to stake claim to a particular color “would unduly hinder not just commerce and competition, but art as well.” In reaching this conclusion,157 not only did the court consider Louboutin’s use of color and the Red Sole M ark, but the court also focused on the use of color in the fashion industry as158 a whole.159 148. Id. at 449. 149. Id. 150. Id. 151. Id. at 450. 152. Id. 153. Id. at 450-51. 154. Id. at 451. 155. Id. at 457. 156. Id. at 452. 157. Id. at 453. 158. Id. at 453-54. 159. Id. at 452-53; see Brief of Amicus Curiae Tiffany (NJ) LLC & Tiffany & Co. in Support of Appellants’ Appeal Seeking Reversal of the District Court’s Decision Denying Appellants’ Motion of Preliminary Injunction, Louboutin I, 778 F. Supp. 2d 445 (S.D.N.Y. 2011) (No. 11-3303- cv), 2011 WL 5126167 at *14 [hereinafter Brief for Tiffany]. 2013] CHRISTIAN LOUBOUTIN’S “RED SOLE M ARK” 257 A. Functionality The court not only acknowledged that color plays a unique role in the fashion industry but also found that it often serves a functional purpose in the fashion industry. Looking at the reasons behind why Louboutin chose to use red and160 why YSL desired to use red, the court concluded that there can be a functional purpose for using the color red on the sole of a shoe. Specifically, Louboutin161 claimed that he chose the color red because it gives the shoe “energy” and makes it “sexy”; whereas, YSL claimed that it used the red sole because it wanted to162 make an entirely red shoe to go along with its 2011 collection, which was composed of outfits embodying a single color theme. These uses and meanings163 behind the use of the color red serve an aesthetic appeal, which courts have held may be a functional purpose. In looking at the functional purpose behind the164 Red Sole Mark, the court focused on this aesthetic function of the red sole, rather than on whether or not the red sole served a utilitarian function. The court165 made reference to the fact that the sole of a shoe is primarily for walking on, but then turned its focus to how use of color in the fashion industry adds a deeper meaning to the good. T he court did not consider whether a red sole on the166 bottom of a high heeled shoe affects the functionality of the shoe’s sole as a part of the shoe and its use for aiding in walking.167 The court also found that the use of the color red affects the cost and quality of the good. In Qualitex, the C ourt looked at the effects of the trademarked168 color on the cost and quality of the good in relation to whether protecting the trademarked color would hinder competition by making it more expensive for a competitor to produce a good of similar quality without the option of using the trademarked color. However, the Southern District Court of New Y ork169 considered the additional expense of adding the Red Sole M ark on high fashion footwear from the opposite perspective. The court concluded that because the170 160. Louboutin I, 778 F. Supp. 2d at 453-54. 161. Id. 162. Id. at 453; see Mourot Decl. Ex. C (Docket No. 22-7) ¶3; Mourot Decl. Ex. C (Docket No. 22-12), at 4. 163. Louboutin I, 778 F. Supp. 2d at 453-54. 164. Id. at 453; see Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1533 (Fed. Cir. 1994). 165. Louboutin I, 778 F. Supp. 2d at 454; see also Brief for Tiffany, supra note 159, at **14- 15. 166. Louboutin I, 778 F. Supp. 2d at 453-54. 167. See Brief for Tiffany, supra note 159, at **14-15 (“The District Court did not explain how the function of a shoe ‘dictates’ that the sole be covered entirely in red lacquer. And it is hard to imagine how such a conclusion could be reached—a shoe would seem to serve the same function regardless of the color of its sole.”). 168. Louboutin I, 778 F. Supp. 2d at 454. 169. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995). 170. Louboutin I, 778 F. Supp. 2d at 454. 258 INDIANA LAW REVIEW [Vol. 46:241 additional step of adding the Red Sole M ark makes the shoe more expensive, which is more desirable in the fashion industry, the Red Sole M ark “makes the final creation that much more exclusive.” W hereas in Qualitex the Court171 considered the additional expense of adding color to a product in the context of determ ining whether the trademark hindered competition, the district court172 considered this additional expense in evaluating the functionality of the trademark.173 In looking at the meaning behind the color red in the fashion design industry as a whole and the added expense of adding a red sole to the bottom of a shoe, the court found that Louboutin’s Red Sole M ark served a “nontrademark” purpose.174 B. Effect on Competition Having decided that “the use of red outsoles serves nontrademark functions other than as a source identifier, and affects the cost and quality of the shoe,”175 the court turned to the second prong of the Louis Vuitton test: whether allowing Louboutin exclusive use of the color red on high fashion footwear would hinder competition. In considering whether the Red Sole M ark would hinder176 competition, the court used the test from Qualitex and asked whether allowing Louboutin the exclusive use of the color red “would permit one competitor (or a group) to interfere with legitimate (nontrademark-related) competition through actual or potential exclusive use of an important product ingredient.” 177 Ultimately, the court decided that it would. 178 To reach this conclusion, the court considered Louboutin’s actual trademark registration description and determined that it was “without some limitation, overly broad and inconsistent with the scheme of trademark registration established by the Lanham Act.” The trademark registration certificate179 description merely indicated that the red sole was for use on wom en’s high fashion designer footwear. The registration did not specify the particular180 shade, the particular type of women’s footwear, or the texture of the lacquer. 181 Instead, the trademark registration certificate indicated that the color for which protection was sought was simply the color red. A t trial, Louboutin submitted182 that the color was actually “Chinese Red,” which is a part of the Pantone color 171. Id. 172. Qualitex, 514 U.S. at 165. 173. Louboutin I, 778 F. Supp. 2d at 454. 174. Id. at 453-54. 175. Id. at 454. 176. Id. 177. Qualitex, 514 U.S. at 170. 178. Louboutin I, 778 F. Supp. 2d at 455-56. 179. Id. at 454. 180. Registration, supra note 10. 181. Louboutin I, 778 F. Supp. 2d at 454-57. 182. Registration, supra note 10. 2013] CHRISTIAN LOUBOUTIN’S “RED SOLE M ARK” 259 system, based on his drawing for trademark registration. However, the court183 184 pointed out that in considering the trademark color, it was constrained to the description and drawing provided on the actual trademark registration certification, which Louboutin could not “amend or augm ent . . . by representations [he] makes in . . . litigation.” 185 The court also pointed out that a description of Chinese Red would still render the trademark overbroad because, due to absorption and different lighting, Chinese Red could take on a broad range of different shades. In Qualitex, the186 Court acknowledged that occasionally courts are required to make a determination on different shades of colors; however, the court in Louboutin187 acknowledged that these determinations generally have not arisen in the context of the fashion industry, “where distinctions in designs and ideas conveyed by single colors represent not just matters of degree but much finer qualitative and aesthetic calls.” 188 Ultimately, the court found that allowing Louboutin the exclusive use of such a broad mark would keep other designers, such as YSL, from being able to effectively create different kinds of red shoes— including entirely red shoes, such as those in YSL’s 2011 collection. Therefore, allowing the trademark would189 hinder competition in violation of the second prong of the Louis Vuitton test. 190 Because the court found that Louboutin’s Red Sole M ark served “nontrademark functions” in the fashion industry, and protecting the Red Sole M ark would likely unduly hinder competition, the court declined to grant Louboutin’s injunction,191 effectively denying protection for his trademark. In response to this denial, Louboutin filed an appeal in the United States Court of Appeals for the Second Circuit, which affirmed in part, reversed in part, and remanded the case. 192 III. LOUBOUTIN II D ECISION The Second Circuit Court addressed the question of “whether a single color may serve as a legally protected trademark in the fashion industry and, in particular, as the mark for a particular style of high fashion women’s footwear.” 193 In looking at the decision by the district court, the Second Circuit held that the lower court’s decision was inconsistent with the Supreme Court precedent 183. Louboutin I, 778 F. Supp. 2d at 455. 184. Id. 185. Id. 186. Id. 187. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 167-68 (1995). 188. Louboutin I, 778 F. Supp. 2d at 456. 189. Id. at 457. 190. Id. at 454-57. 191. Id. at 454, 457-58. 192. Louboutin II, 696 F.3d 206 (2d Cir. 2012). 193. Id. at 211. 260 INDIANA LAW REVIEW [Vol. 46:241 established in Qualitex. Specifically, the court held that Louboutin’s Red Sole194 M ark “ha[d] acquired limited ‘secondary meaning’” in the context of high fashion footwear with a red outsole that contrasted with the shoe’s upper.195 Consequently, because the monochrome design by YSL did not fall within the parameters of this limited secondary meaning, the design by YSL did not infringe on Louboutin’s trademark.196 Also, the Second Circuit held that the per se rule created by the district court against color marks in the fashion industry was inconsistent with the decision in Qualitex where the court “specifically forbade the implementation of a per se rule that would deny protection for the use of a single color as a trademark in a particular industrial context.” Accordingly, in looking at a trademark for a197 single color, the court must conduct “an individualized, fact-based inquiry into the nature of the trademark.” Turning to the Red Sole M ark, the court applied198 the same test used by the district court— the Louis Vuitton test. However, the199 court stopped after considering the first prong of the test and did not discuss the functionality or likelihood of confusion in regards to the Red Sole M ark. 200 Because the court found “that the Red Sole M ark ha[d] acquired limited secondary meaning” that did not include the monochrome design by YSL being challenged in the action, the court left open the door for possible future challenges to the Red Sole M ark under the second prong of Louis Vuitton. 201 Specifically, because the court only addressed the distinctiveness of the Red Sole M ark under the first prong, it failed to consider the possibility that the Red Sole M ark could serve a functional purpose. 202 IV. FUNCTIONALITY OF THE RED SOLE M ARK Both the district court and the Second C ircuit addressed the functionality doctrine in regards to the fashion industry; however, only the district court specifically addressed the functionality doctrine in reference to the Red Sole M ark. Because the Second Circuit stopped short of considering the203 functionality doctrine, it is possible that Louboutin could still face challenges to his M ark, even as altered by the court. For example, Louboutin could face a future action by a designer who wishes to use the color red on the outsole of a pair of shoes in a design collection where each pair of shoes has a different color outsole, such that all pairs in a line would make up the colors of the rainbow. 194. Id. at 212. 195. Id. 196. Id. 197. Id. at 223. 198. Id. 199. Id. at 224. 200. Id. at 225. 201. Id. 202. See id. 203. See supra Part II.A. 2013] CHRISTIAN LOUBOUTIN’S “RED SOLE M ARK” 261 Under the reasoning of the district court, the rainbow design would likely be allowed, in violation of the R ed Sole M ark, because the use of the color red on the outsole is serving a non-functional purpose. However, because the Second204 Circuit slightly modified the Red Sole M ark registration and disposed of the per se functionality analysis adopted by the district court, it is necessary to consider the analysis of the aesthetic functionality doctrine as presented by the Second Circuit to determine whether the exemplified use will be allowed. The Second Circuit set forth a test for aesthetic functionality, referencing both the two prong test from Inwood, and the competition inquiry set out in Q ualitex. In addressing the Inwood portion of the test, the court stated that a205 court must ask whether the design feature is “either essential to the use or purpose or affects the cost or quality of the product at issue.” If either of these prongs206 are met, then the inquiry ends and the design is considered functional.207 However, if neither of these prongs are at issue, then the design must pass the competitive inquiry test of Qualitex, and the design must “be shown not to have a significant effect on competition in order to receive trademark protection.”208 Based on this test and the rainbow shoe collection example, it would appear that the color red on the outsole of a shoe serves an aesthetic function and cannot be awarded protection in such instances. However, there is more to the story. The Second Circuit also stated: In short, a mark is aesthetically functional, and therefore ineligible for protection under the Lanham Act, where protection of the mark significantly undermines competitors’ ability to compete in the relevant market. In making this determination, courts must carefully weigh “the com petitive benefits of protecting the source-identifying aspects” of a mark against the “competitive costs of precluding competitors from using the feature.”209 The question then becomes whether the limitation on the color red created by Louboutin’s M ark is significant enough to cause him to lose his mark. Based on the decisions by the district court and the Second Circuit, Louboutin would be wise to be weary of how a future court will answer this question. Accordingly, in order to protect his M ark and the recognition that he has created through the use of his M ark, Louboutin should alter his trademark. V. STRENGTHENING THE R ED SOLE M ARK The main problem with Louboutin’s trademark is that it lacks specificity. His 204. Id. at 222. 205. Id. 206. Id. at 220 (internal quotation marks omitted). 207. Id. 208. Id. 209. Id. at 222 (quoting Fabrication Enters., Inc. v. Hygenic Corp., 64 F.3d 53, 59 (2d Cir. 1995) (internal citations omitted)). 262 INDIANA LAW REVIEW [Vol. 46:241 trademark registration certificate does not designate the type of shoe, the shade of red, or the finish of the color that the tradem ark is intended to protect. 210 H owever, under the Lanham Act, a designer can narrow the scope of his or her trademark registration. In the case of the Red Sole M ark, Louboutin has a211 number of different options he should take to limit the Red Sole M ark such that it would greater warrant protection under the Lanham Act. First, Louboutin should alter his trademark registration to cover a more limited range of shoes. For example, rather than claiming a trademark in the market of women’s fashion footwear generally, he should designate that his trademark applies only in the market of women’s high-fashion, high-heeled footwear. This limitation would protect his trademark from challenges made by designers who desire to place a red sole on ballet flats or flat boots, which Louboutin has indicated his trademark was not intended to encompass.212 Second, in regard to the color red, Louboutin should add that the color of his M ark is Chinese Red of the Pantone color group, and he should also list the range of colors around Chinese Red that he desires to protect. This clarification will address the court’s concern regarding the specific shade of red, and the range of colors around the specific shade of red, that are encompassed by the Red Sole M ark. Limiting the protection of the Red Sole M ark to Chinese Red would allow other designers to use different reds, such as Bashful Red or Jubilee Red from the Pantone color group, on the soles of their shoes. Additionally, these alternative213 colors could be used to convey the same sex appeal that Louboutin cites for choosing to put Chinese Red on the soles of his shoes. Third, Louboutin could specify the finish of the red sole that he desires to protect. For example, Louboutin could indicate on his certificate of registration that the lacquer sole is a high gloss finish, a matte finish, or a flat finish. 214 Finally, although the Circuit Court stipulated that the Red Sole M ark only covers shoes with a contrasting upper, the court did not explicitly define the exact parameters of the exception. For example, would a red sole shoe with a215 partially red upper be considered a contrast? Although the court defined the “upper” as “the visible portions of the shoe other than the outsole,” it did not216 explicitly outline how much of the upper has to contrast with the remainder of the 210. Registration, supra note 10. 211. PROTECTING YOUR TRADEMARK, supra note 26, at 8. 212. Louboutin I, 778 F. Supp. 2d 445, 456 (S.D.N.Y. 2011), aff’d in part, rev’d in part, Louboutin II, 696 F.3d 206 (2d Cir. 2012). 213. These two colors in the Pantone color scale are considered red, yet they are very different from Chinese Red. Bashful Red is a very light red that normally gives off a pink hue, and Red Jubilee incorporates purple hues to make it appear very dark. 214. A high gloss finish would make the red sole appear shiny and glossy. A matte finish would provide the red with some sheen; however, it is not as shiny as a high gloss finish. A flat finish, on the other hand, would have no shine or sheen and would make the color appear dull and flat. 215. Louboutin II, 696 F.3d at 212, 228. 216. Id. at 227 n.25. 2013] CHRISTIAN LOUBOUTIN’S “RED SOLE M ARK” 263 shoe. Accordingly, it would be beneficial for Louboutin to better articulate his registration to cover only shoes with a red sole that have an upper with a predom inately different color. This limitation will allow for the creation of monochromatic designs without violating his M ark, while keeping his M ark enforceable against another designer who wishes to use a red sole with a small amount of red on the upper in the hopes of side-stepping Louboutin’s M ark. These limitations of Louboutin’s Red Sole Mark would address the concerns of the district court and better support Louboutin’s position that his Red Sole M ark warrants protection in possible future actions where a party wishes to challenge the functionality of his M ark. C ONCLUSION Christian Louboutin was lucky to have a court that understood the importance of protecting fashion designs from being copied and sold for a fraction of the cost. However, given that the circuit court chose to cut its analysis short and not consider the functionality doctrine, it is possible that Louboutin could find himself in a similar position in the near future. In an industry where color is so highly regarded as a means of creativity, he would be wise to bolster the strength of his M ark by limiting it and better defining it.